Naked Cowboy, M&M candy Maker End Suit with a Close-Door Settlement

Holding:

The Naked Cowboy, whose real name is Robert Burck, and who sued candy-maker Mars, Inc. for $6 million for dressing an animated M&M in Burck’s signature outfit and broadcasting it on a video billboard, has decided to end his lawsuit for unspecified reasons. In papers filed in the U.S. District Court for the Southern District of New York, Burck and Mars, Inc. both agreed and stipulated that the action be dismissed with prejudice, with each party bearing his own costs and attorney's fees. Burck, a fixture in Manhattan's Times Square for more than 10 years, sued in February 2008, accusing Mars of copying his trademarked image. Burck said he holds a federal trademark for his likeness and occasionally licenses it to companies for ads. The parties resolved to terminate the case with a closed-door settlement.

Detailed Summary:

Plaintiff Robert Burck is a “street entertainer” who performs in New York City’s Times Square as The Naked Cowboy, wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar strategically placed to give the illusion of nudity. Opinion of the district court of 06/23/2008, p. 4, citing Complaint, p. 26.

Starting in April 2007, defendants Mars, Incorporated (“Mars”) and Chute Gerdeman, Inc. (“Chute”) began running an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed “exactly like The Naked Cowboy,” wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar.

Mars sells candies and chocolate products, including the world-famous M&M’s. Id., citing Complaint, paragraph 33. Mars retained Chute, an advertising and design agency, to create a video for two electronic billboards in Times Square and a mural for its M&M World store located in Times Square. Id., citing Complaint, paragraph 32-33.

In this case, plaintiff Burck sued defendants for compensatory and punitive damages. He alleged that defendants violated his “right to publicity” under New York law and infringed his trademarks under federal law by using his likeness, persona, and image for commercial purposes without his written permission and by falsely suggesting that he had endorsed M&M candy.

In an opinion issued on June 23, 2008, the district court ruled that the Burck’s Lanham Act claim should proceed.  The district court then held that whether the M&M Cowboy characters were parodies of The Naked Cowboy raised factual questions that were not for the court to decide at this stage of the litigation.  The district court also rejected defendants’ argument that some consumers might view the M&M Cowboy characters as a part of a larger work depicting New York scenes and parodying famous New York characters. The district court reasoned that other consumers might mistakenly believe that The Naked Cowboy himself endorsed the copying of his “trademarked likeness” because the M&M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M&M World store). Moreover, even assuming that the M&M Cowboy characters were parodies, a fact-finder may nevertheless conclude that the parodies were too weak to negate the potential for consumer confusion. Id. , pp. 18-19, citing Schieffelin & Co. v. Jack Co. of Boca, Inc., 725 F. Supp. 1314, 1324 (S.D.N.Y. 1989).

On a motion to dismiss, a court must accept the factual allegations in the complaint and may consider only whether the pleading plausibly states a claim for relief. Id., p. 19, citing Iqbal v. Hasty, 490 F.3d 143, 157-58 (2d Cir. 2007). Here, the complaint alleged that the M&M Cowboy characters, dressed just like The Naked Cowboy, “implied, falsely, that Burck’s character, The Naked Cowboy, endorse(d) the M&M product.” Id., citing Complaint, paragraph 41. The complaint plausibly argued that consumers would believe that the M&M Cowboy characters were promoting a product rather than merely parodying The Naked Cowboy, and that viewers would believe that The Naked Cowboy had endorsed M&Ms. Hence, the complaint alleged sufficient facts to support a false endorsement claim. Accordingly, the district court denied defendants’ motion to dismiss plaintiff Burck trademark infringement claim (Lanham Act claim).

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